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Fair Use Of Registered Trademarks
This page is devoted to a trademark infringement dispute Yarn Tree and Larry Johnson are having with S C Johnson & Son, Inc.
If you have been in business long enough, sooner or later you are going to get the cease and desist letter. This page is not advice on how to handle cease and desist letters, it is sort of a journal of how Yarn Tree and Larry Johnson are handling this particular case. This case was not definitively resolved. The case was dismissed. I have the option to file again, but I probably will not bother. I think I have made my point.
If you are just starting your research on trademarks here is a very basic overview of trademark law.
But first, lets get the standard "I am not a lawyer and this is not legal advice and you need to talk to a real lawyer who will charge you big bucks for the same information you could find for free on the internet" notice out there. OK. There, that is done. Don't we all feel more protected now.
In August of 2013 we received the first cease and desist (C&D) letter from S C Johnson & Son, Inc. informing us that the use of the term ziplock or zip-lock, or zip lock to describe a resealable plastic bag was an infringement on their Ziploc (R) trademark and threatened us with dire consequences if we did not change our evil ways. Alright, it didn't really say that last part, but you get the idea.
This was followed by another letter, several emails, and phone calls from at least two or three different lawyers.
So What Should You Do?
But other times C&D letters are just legal extortion. Make this change, even though you are not legally required to do so, or you will be faced with potentially ruinous legal bills. The white collar version of, "Nice little business you have here. It would be a shame if something happened to it."
We felt strongly that SC Johnson's assertion of trademark infringement were baseless and would not hold up in court, so we decided to fight back.
On November 18, 2013 Yarn Tree filed a federal lawsuit against SC Johnson requesting a declaratory judgment. This is a request for the judge to rule on the case without actually going to trial.
It costs $400 to file a lawsuit in federal court, which we should recover from SC Johnson when (if) we win. One of the main advantages of our filing is that we are able to file in our 'home court' (Iowa), rather than waiting to defend ourselves in the court of SC Johnson's choosing. The rules for filing vary by court, so be sure to check with your local court if you decide to try this for yourself.
Summary Of The Dispute
SC Johnson threatened a lawsuit against Yarn Tree and Larry Johnson personally alleging trademark infringement. They demanded that we not use the descriptive terms ziplock, zip-lock, or zip lock to describe ziplock bags or in a web address. (I own the URL ziplockplasticbags.com personally.)
We are claiming that the use of these terms is "fair use" and allowed by federal trademark law. One of the defenses specified in the law is the use of descriptive words. (See section b(4) at http://www.law.cornell.edu/uscode/text/15/1115))
While a company could name their oil change business "Speedy Oil Change", they can not complain if another business runs an ad saying that their oil changes are speedy. The key is "descriptive". The second company could not advertise one of their services as "Speedy Oil Service" or even "Speedee Oil Change" because this is not a descriptive use (they would be using the word Speedy as a trademark).
Why Is S C Johnson Even Bothering With This?
Why is S C Johnson even bothering with this entire issue? So far, S C Johnson has had six different lawyers working on this case. There are three lawyers in two law firms working on the current suit. Looking at our sales of ziplock bags, it certainly does not make sense. So why bother?
My guess is that S C Johnson is afraid of losing their trademark because it has become generic. If I win this case, it will not cancel S C Johnson's trademark; but it will move them one step closer to losing the trademark.
If you read this overview of trademarks, you will remember that there are 5 categories of trademarks (fanciful, arbitrary, suggestive, descriptive, and generic). As you can imagine, it is not always easy to say into which category a trademark falls. The word ziplock is either descriptive or generic. As it implies, a descriptive trademark uses words that describe a characteristic of the product or service. Salty (a brand of crackers), Jiffy Lube (oil change service), and Best Buy (retail store) are descriptive trademarks.
A generic word does not merely describe a characteristic of the product or service, it IS the product or service. A generic word can be used as a trademark, BUT it cannot be REGISTERED as a trademark; AND what is important for S C Johnson, a word that becomes generic will loose its trademark registration.
There are many examples of trademarks that have lost their trademarks because they became generic. That is, they started out as a trademark, but eventually became the common name for the product. Linoleum, escalator, cellophane, kerosene, mimeograph, shredded wheat, dry ice, thermos, yo-yo, and corn flakes all started out as registered trademarks but are now generic.
Ironically, Parker Brothers has even lost its trademark monopoly on the board game Monopoly. In 1983 the US Supreme Court let stand a ruling by the United States Court of Appeals for the Ninth Circuit, in San Francisco, ruling that a trademark becomes invalid when it primarily denotes the product, not the producer. The court held that a registered trademark must be canceled if it becomes ''the common descriptive name of an article.''
S C Johnson has the added problem that their trademark (Ziploc) is pronounced the same as the descriptive or generic word ziplock. The trademark office considers phonetically identical words like ziploc to be simply misspellings of the original word (ziplock). Other examples are foto and photo, EZ and easy, quik and quick, and so on. So if ziplock is generic (that is, it does not simply describe a characteristic of this type of bag, but has become the name for this type of bag), it could be argued that Ziploc is generic as well, and should have its trademark registration revoked.
Ask yourself: you are going to the airport and someone reminds you to put your carry on liquids into a ziplock bag. Do you think of a bag produced only by S C Johnson, or do you think of a type of bag, regardless of the producer? That is what worries S C Johnson.
A Lawsuit Is Not For The Faint Of Heart
A lawsuit can take a lot of time and a LOT of money. S C Johnson was not even subtle about it. In their phone calls they were explicit. If we dared fight them, they would bury us in legal bills. We decided to file the suit pro se, that is we filed the lawsuit without an attorney.
Corporations Must Have A Lawyer (Our First Of Many Mistakes)
Unfortunately Yarn Tree is a corporation (Yarn Tree Designs, Inc). It is not a law, but federal courts have made up the rule that for a corporation to file a lawsuit, it must be represented by an attorney (otherwise we would have all these lawyers living in cardboard boxes and under bridges). As a result our lawsuit was dismissed. The suit was dismissed without prejudice. That means we can file the lawsuit again if we pay for a lawyer. We do not want to do this right now, since this would allow S C Johnson to deliberately run up our legal bills. I don't feel too bad about this mistake. Later I talked to a lawyer at one of the biggest law firms in Iowa (big frog, little pond) and he did not know that corporations needed a lawyer.
Individuals Don't Need A Lawyer (S C Johnson's First Mistake)
Remember when I said that I owned the URL ziplockplasticbags.com as an individual? Well, S C Johnson did not bother to check who actually owned this URL when they threatened to sue for trademark infringement. This allowed me to file another suit in my own name (not the name of the corporation). Individuals (but not corporations) are able to file federal lawsuits without a lawyer. This new suit is far narrower in that it just covers the ziplockplasticbags.com site.
Joinder (Just Legalese for Join)
Oh, how lawyers love to use jargon. In an effort to get back to their goal of running up our legal bills, S C Johnson filed a motion to have Yarn Tree Designs, Inc. added to my lawsuit. The judge agreed with this request and ruled that Yarn Tree Designs Inc. be joined as a plaintiff. The judge's logic was a little weak in my opinion, but that was the judge's call. The basic idea of joining two or more parties has three purposes: 1) to reduce the time and expense of having multiple lawsuits, 2) prevent the possibility of conflicting rulings, and 3) to prevent rulings that can not be enforced because a needed party was not involved in the suit.
Copy Of The Complaint
On Oct 2, 2014 (14 months after this dispute started) I filed an amended complaint including Yarn Tree Designs Inc as in involuntary plaintiff.
Yarn Tree was listed as an involuntary plaintiff because Yarn Tree Designs, Inc. refused to voluntarily join as a plaintiff. Yarn Tree wants to wait and see the outcome of this case before deciding on how to proceed.
S C Johnson Files Yet Another Motion
Oct 15, 2014. S C Johnson file a motion (actually three lawyers filed motions) challenging the addition of Yarn Tree as an involuntary plaintiff. And to give them credit, the motions were probably correct. Remember when I said the judge ordered that Yarn Tree should be joined as a plaintiff? Well, that was not exactly the correct call.
The judge and S C Johnson both knew that Yarn Tree did not want to hire a lawyer at this time. After all, if Yarn Tree wanted to hire a lawyer, all Yarn Tree had to do was re-file its original suit that was dismissed without prejudice. Without Yarn Tree's agreement to join the suit, Yarn Tree could not be added as a plaintiff. But the judge's ruling specifically stated that Yarn Tree must added as a plaintiff, so I added Yarn Tree as an involuntary plaintiff.
The case has been dismissed without prejudice, which is just a fancy way of saying it was dismissed, but you can make corrections and file again. I think I have made my point and as long as S C Johnson does not bother me, I may not bother them.
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